PART IV.

Miscellaneous.

63. —A person who makes or causes to be made a false entry in the register, or a writing falsely purporting to be a copy of an entry in the register, or who produces or tenders or causes to be produced or tendered in evidence any such writing, knowing the entry or writing to be false, shall be guilty of an offence under this section and shall be liable on summary conviction thereof to a fine not exceeding one hundred pounds or, at the discretion of the court, to imprisonment for any term not exceeding three months or to both such fine and such imprisonment.

64. —(1) Any person who makes a representation—

(a) with respect to a mark not being a registered trade mark, to the effect that it is a registered trade mark; or

(b) with respect to a part of a registered trade mark not being a part separately registered as a trade mark, to the effect that it is so registered; or

(c) to the effect that a registered trade mark is registered in respect of any goods in respect of which it is not registered; or

(d) to the effect that the registration of a trade mark gives an exclusive right to the use thereof in any circumstances in which, having regard to limitations entered on the register, the registration does not give that right;

shall be guilty of an offence under this section and shall be liable on summary conviction thereof to a fine not exceeding twenty pounds and, in the case of a continuing offence, a further fine not exceeding five pounds for every day on which the offence continues.

(2) For the purposes of this section, the use in the State in relation to a trade mark of the word “registered”, or of any other word referring whether expressly or impliedly to registration, or of a prescribed symbol shall be deemed to import a reference to registration in the register, except—

(a) where that word or that symbol is used in physical association with words delineated in characters at least as large as those in which that word or that symbol is delineated and indicating that the reference is to registration as a trade mark under the law of a place outside the State, being a place under the law of which the registration referred to is in fact in force;

(b) where that word (being a word other than the word “registered”) or that symbol is of itself such as to indicate that the reference is to such registration as last aforesaid; or

(c) where that word or that symbol is used in relation to a mark registered as a trade mark under the law of a place outside the State and in relation to goods to be exported to that place.

65. —Any person who without lawful authority uses in connection with any business, trade, calling or profession any badge, device, emblem, or flag reserved by law for the use of, or commonly used by, the State, the Defence Forces, any officer of the State or any Department of State (or any badge, device, emblem, or flag so closely resembling the same as to be likely to deceive) in such manner as to be likely to lead to the belief that he is duly authorised to use such badge, device, emblem, or flag, shall be guilty of an offence under this section and shall be liable on summary conviction thereof to a fine not exceeding twenty pounds (and, in the case of a continuing offence, to a further fine not exceeding five pounds for every day on which the offence continues) or, at the discretion of the court, to imprisonment for any term not exceeding three months.

66. —The use of a registered trade mark in relation to goods between which and the person using it any form of connection in the course of trade subsists shall not be deemed to be likely to cause deception or confusion on the ground only that the trade mark has been, or is, used in relation to goods between which and that person or a predecessor in title of his a different form of connection in the course of trade subsisted or subsists.

67. —(1) Where the relations between two or more persons interested in a trade mark are such that no one of them is entitled as between himself and the other or others of them to use it except—

(a) on behalf of both or all of them, or

(b) in relation to an article with which both or all of them are connected in the course of trade,

those persons may be registered as joint proprietors of the trade mark, and this Act shall have effect in relation to any rights to the use of the trade mark vested in those persons as if those rights had been vested in a single person:

Provided that the rights of any person who is so registered shall be deemed to be infringed by any other of the said persons who uses the trade mark in physical or other relation to goods in respect of which the trade mark is registered under this section, but with which both or all of the said persons are not and have not been connected in the course of trade.

(2) Subject to subsection (1) of this section, nothing in this Act shall authorise the registration of two or more persons who use a trade mark independently, or propose so to use it, as joint proprietors thereof.

68. —(1) There shall not be entered in the register any notice of any trust express, implied or constructive, nor shall any such notice be receivable by the Controller.

(2) Subject to this Act, equities in respect of a trade mark may be enforced in like manner as in respect of any other personal property.

69. —(1) Whenever under this Act any act has to be done by or to any person in connection with a trade mark or any procedure relating to a trade mark or the registration thereof, the act (if not excepted by the rules) may, under and in accordance with rules made under this section or, in particular cases, with the consent of the Minister, be done by or to an agent of that person duly authorised in the prescribed manner and, if acting for gain, registered in the register kept under subsection (2) of this section.

(2) There shall be kept at the Office a register which shall be called the register of trade mark agents, and no person shall, either alone or in partnership with any other person, practise, describe himself, hold himself out, or permit himself to be described or held out, as a trade mark agent, unless he is registered in the register of trade mark agents, and a partnership shall not so practise, describe itself, hold itself out, or permit itself so to be described or held out, unless all the partners are so registered.

(3) Any person who—

(a) resides in the State,

(b) has a place of business in the State,

(c) is not an alien (within the meaning of section 2 of the Irish Nationality and Citizenship Act, 1956 ),

(d) possesses the prescribed educational and professional qualifications, and

(e) complies with the prescribed conditions,

shall be eligible to be registered in the register of trade mark agents, and a partnership shall be so eligible if every partner thereof is registered in accordance with this section, and a person or partnership so eligible shall on application in the prescribed form and manner and on payment of the prescribed fee, be so registered.

(4) Notwithstanding subsection (3) of this section any person who has been in continuous practice as a trade mark agent in the State for a period of five years before the commencement of this Act and makes application (in the prescribed form and manner and upon payment of the prescribed fee) for registration within twelve months from the commencement of this Act shall be eligible to be registered in the register of trade mark agents.

(5) Any person who at any time after the expiration of three months from the commencement of this Act contravenes this section shall be guilty of an offence under this section and shall be liable on summary conviction thereof to a fine not exceeding, in the case of a first offence, twenty pounds and, in the case of a second or subsequent offence, one hundred pounds.

(6) Any person registered in the register of trade mark agents who—

(a) ceases to be eligible to be so registered, or

(b) applies to be removed from the register,

may be removed by the Controller from the register of trade mark agents, but no person shall be so removed (except on his own application) without being given an opportunity of being heard.

(7) (a) Where a person registered in the register of trade mark agents is found by the Controller, after due inquiry by the Controller (including the hearing by the Controller of representations, if any, by the person), to have been guilty of conduct disgraceful to that person in a professional respect, the Controller may, if he sees fit, decide that the name of that person should be erased from the register of trade mark agents.

(b) On making a decision under this subsection, the Controller shall forthwith send by post to the person to whom the decision relates, at his address as stated in the register of trade mark agents, a notice in writing stating the decision, the date thereof and the reason therefor.

(c) A person to whom a decision of the Controller under this subsection relates may, within the period of fourteen days beginning on the date of the decision, on giving notice to the Controller in the prescribed manner apply to the Court for cancellation of the decision, and if he so applies—

(i) the Court, on the hearing of the application, may either—

(I) cancel the decision, or

(II) confirm the decision and direct the Controller to erase the name of such person from the register of trade mark agents,

(ii) if at any time the Controller satisfies the Court that such person has delayed unduly in proceeding with the application, the Court shall, unless it sees good reason to the contrary, confirm the decision and direct the Controller to erase the name of such person from the register,

(iii) the Court may, subject to section 54 of this Act, direct how the costs of the application are to be borne.

(d) Where a person to whom a decision of the Controller under this subsection relates does not, within the period of fourteen days beginning on the date of the decision, apply to the Court for cancellation of the decision, the Controller may apply ex parte to the Court for confirmation of the decision and, if the Controller so applies, the Court, on the hearing of the application, shall, unless it sees good reason to the contrary, confirm the decision and direct the Controller to erase the name of such person from the register of trade mark agents.

(e) The decision of the Court on an application under this subsection shall be final, save that, by leave of the Court, an appeal, by the Controller or the person concerned, from the decision shall lie to the Supreme Court on a specified question of law.

(f) On erasing the name of a person from the register of trade mark agents under this subsection, the Controller shall forthwith send by post to such person, at his address as stated in the register of trade mark agents, notice in writing of the erasure.

(g) A person whose name has been erased from the register of trade mark agents under this subsection may at any time be restored to the register by special direction of the Controller but not otherwise, and when a person is so restored to the register, the Controller may attach to the restoration such conditions (including the payment of a fee not exceeding the fee which would be payable by such person if he was then being registered for the first time) as the Controller thinks fit.

(8) A person (in this subsection referred to as an agent) duly authorised by any person under subsection (1) of this section to act as his agent may (subject to any provision to the contrary in any agreement between the agent and that person), on giving notice to the Controller and that person, cease to act as agent for that person.

(9) The Minister may by order make rules under this section for the management of the register of trade mark agents, and may by such rules prescribe any matter or thing referred to in this section as prescribed, and in particular may so prescribe the educational and professional qualifications and the conditions for eligibility for registration in the register of trade mark agents, and the maximum fees which may be charged by any person registered in the register of trade mark agents for such services in connection with the registration of trade marks as may be specified in such rules.

(10) (a) A person who is registered in the register of trade mark agents shall not be guilty of an offence under section 58 of the Solicitors Act, 1954 , by reason only of the preparation by him for use in proceedings under this Act before the Controller or the Court of any document other than a deed.

(b) Notwithstanding subsection (5) of this section, it shall not be an offence under this section for the legal personal representative of a deceased trade mark agent to carry on business or practise in the name of that deceased trade mark agent for a period not exceeding three years from the death of that trade mark agent, or for such further period (if any) as the Court allows, if the legal personal representative is himself a trade mark agent or employs a trade mark agent to manage the business or practice on his behalf.

(11) Notwithstanding subsection (3) of this section, the Minister may, with a view to the fulfilment by the Government on behalf of the State of any international agreement to which the State is a party, by order declare that a citizen of a particular state (being a state which is also a party to that international agreement) shall, if he otherwise complies with that subsection, be eligible to be registered in the register of trade mark agents.

(12) Notwithstanding subsection (4) of section 10 of the Petty Sessions (Ireland) Act, 1851, summary proceedings for an offence under this section may be instituted within twelve months from the date of the offence.

70. —(1) Where any person has applied, in a foreign state which is a party to any international agreement for the mutual protection of trade marks to which the State is a party, for protection of a trade mark of which that person is the proprietor, that person or his legal representative or assignee shall be entitled to registration under this Act of that trade mark in priority to other applicants; and the registration shall have the same date as the date of the application in that foreign state:

Provided that—

(a) the application in the State is made within the prescribed period, and

(b) nothing in this section shall entitle the proprietor of a trade mark to recover damages for any infringement occurring prior to the date which, but for subsection (1) of section 27 of this Act, would have been the date of registration of that trade mark.

(2) The registration under this Act of a trade mark to which this section applies shall not be invalidated by reason only of the use of that trade mark in the State during the period prescribed under paragraph (a) of subsection (1) of this section as that within which the application for such registration may be made.

(3) An application for the registration under this Act of a trade mark to which this section applies shall be made in the manner specified in section 25 of or, in the case of a certification trade mark in the manner specified in the First Schedule to this Act.

(4) Any person who by an application which—

(a) in accordance with the law of any foreign state is equivalent to an application duly made in that foreign state or

(b) in accordance with the terms of any international agreement subsisting between any two or more foreign states is equivalent to an application duly made in one of those foreign states,

has applied for protection of a trade mark of which he is the proprietor shall for the purpose of this section be deemed to have so applied in that foreign state.

(5) This section shall apply only in the case of those foreign states with respect to which the Government, by order, declares it to be applicable and so long only in the case of each foreign state as the order continues in force with respect to that foreign state.

(6) In this section “foreign state” includes any territory for the foreign relations of which any state (being a state which is a party to any international agreement for the mutual protection of trade marks to which the State is a party) considers itself responsible.

71. —Where an offence under section 63 , 64 , 65 , or 69 of this Act—

(a) is committed by a body corporate or a partnership or by a person purporting to act on behalf of a body corporate or a partnership, and

(b) is proved to have been so committed with the consent or approval of, or to have been facilitated by any default on the part of, any person being, in the case of a body corporate, a director thereof, or, in the case of a partnership, a partner thereof,

that person shall also be guilty of the offence.

72. —The transitional provisions set out in the Second Schedule to this Act shall have effect with respect to the matters therein mentioned respectively.